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Patrizzi v. Bourne In Time, Inc.

United States District Court, Second Circuit

August 5, 2013

BOURNE IN TIME, INC. et al., Defendants.


PAUL A. ENGELMAYER, District Judge.

Plaintiff Osvaldo Patrizzi brings this action against defendants Bourne in Time, Inc. ("Bourne"), Antiquorum S.A., Antiquorum USA, Inc., (together, "Antiquorum"), Evan Zimmerman, and William Rohr (collectively, "defendants"). Patrizzi alleges, inter alia, that defendants violated the Lanham Act, 15 U.S.C. §§ 1051 et seq., by using internet domain names that allegedly infringed on several common law trademarks incorporating Patrizzi's personal name, which Patrizzi alleges are his own trademarks entitled to protection. Defendants move for summary judgment on Patrizzi's Lanham Act claims, arguing that they purchased the right to use Patrizzi's name, and therefore were entitled to use the allegedly infringing domain names. For the reasons that follow, defendants' motion is denied.

I. Background

A. Overview of the Parties and Allegations[1]

Patrizzi is a well-known timepiece expert and auctioneer. In 1974, Patrizzi founded an auction house that would come to be named Antiquorum and which he would build into a successful multi-national entity. In 2005, Patrizzi sold his interest in Antiquorum to Artist House Holdings, Inc. ("Artist House"). Although Patrizzi initially remained on Antiquorum's board, in 2007, he left on disputed terms. Litigation ensued, in multiple courts and countries.

This motion involves one set of Patrizzi's claims in this Court: that defendants infringed several common law trademarks belonging to him. In 2008, after leaving Antiquorum, Patrizzi founded Patrizzi & Co. Auctioneers, another timepiece auction house, and registered the domain name "" Patrizzi claims that he owns the common law trademarks "Osvaldo Patrizzi, " "Patrizzi & Co. Auctioneers, " and "" In October 2010, Patrizzi discovered that upon typing certain slight misspellings[2] of Patrizzi's registered domain name into the navigation bar of a web browser, one would be redirected to a website, ", " owned by defendant Bourne. That site, in turn, would direct users to another site, ", " which belongs to Bourne's parent company, defendant Antiquorum.[3] Patrizzi alleges that defendants sought to profit off the goodwill associated with Patrizzi's name by confusing consumers into thinking that they were participating in auctions approved by or associated with Patrizzi.

B. Procedural History

On April 7, 2011, Patrizzi filed the Complaint in this action. Dkt. 1. He brought three claims under the Lanham Act, three claims under the Racketeer Influenced and Corrupt Organizations Act of 1970 ("RICO"), 18 U.S.C. §§ 1961 et seq., and four claims under New York statutory and common law. Defendants moved to dismiss the Complaint. On October 11, 2012, the Court issued an Opinion & Order, dismissing Patrizzi's RICO claims. Dkt. 61 ("Op."), available at No. 11 Civ. 2386 (PAE), 2012 WL 4833344 (S.D.N.Y. Oct. 11, 2012). However, that Opinion denied defendants' motion to dismiss Patrizzi's Lanham Act claims. Op. 11-14.[4] Defendants had argued that they were entitled to use the domain names at issue because they had purchased the right to use Patrizzi's name as a mark when Artist House purchased Patrizzi's interest in Antiquorum in 2005. The Court held that, at the motion to dismiss stage, it was required to credit Patrizzi's assertion that he was the personal owner of the marks at issue. Id. However, because this was a potentially dispositive issue, the Court directed expedited discovery on the following questions: "(1) whether Patrizzi or another individual is the owner' of the asserted trademarks, and (2) what effect, if any, the 2005 Antiquorum sale had on such ownership." Id. at 14-15.

On April 29, 2013, Patrizzi voluntarily dismissed one of his three Lanham Act claims, with prejudice. Dkt. 87. Thus, two Lanham Act claims remain: false designation of origin, in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and federal trademark cyberpiracy, in violation of § 43(d) of the Lanham Act, 15 U.S.C. § 1125(d).

On May 7, 2013, defendants moved for summary judgment on the Lanham Act claims, arguing that, based on the record assembled during the targeted discovery period, defendants own the right to use Patrizzi's name. Dkt. 90 ("Def. Br."). On June 5, 2013, Patrizzi opposed that motion. Dkt. 101 ("Pl. Br."). On June 19, 2013, defendants filed a reply. Dkt. 103 ("Def. Reply Br.").

C. Patrizzi's Name as a Mark

Patrizzi was born in 1945. Patrizzi Dep. 5. He grew up in Italy and Switzerland, and has been involved in the purchase, sale, and repair of watches since age 13. Patrizzi Decl. ¶ 2; Patrizzi Dep. 5-6. At age 16, he opened his own watch- and clock-making firm, and by age 21 he was an expert working for the Association of Antiquities in Milan. Patrizzi Dep. 6. In 1974, Patrizzi and a friend named Gabriel Tortella started an auction house for timepieces in Geneva, Switzerland. Patrizzi Decl. ¶ 3; Patrizzi Dep. 7-9. In 1981, the company's name was changed to Antiquorum; in 1984, Patrizzi bought Tortella's interest in the company. Patrizzi Dep. 7-9. Antiquorum eventually expanded to include several related companies; at its peak, Antiquorum had approximately 50 employees working at offices in Geneva, Hong Kong, New York, Japan, Milan, London, Paris, and Shanghai. Patrizzi Decl. ¶¶ 4, 8; Patrizzi Dep. 8-9; Verhoeven Decl. ¶¶ 2, 13. Patrizzi was the Chief Executive Officer of Antiquorum between its inception and 2007, the co-chairman of its board of directors between 1981 and 2005, and the sole chairman of the board between 2005 and 2007. Patrizzi Decl. ¶ 5.

By the early 1980s, Patrizzi had become well known in the timepiece industry, based on his development of the first website for online timepiece auctions, and his expertise in evaluating and auctioning timepieces. Id. ¶¶ 6-7; Patrizzi Dep. 21; Verhoeven Decl. ¶ 5. For the more than 30-year period following Antiquorum's founding, Patrizzi was associated with Antiquorum. Patrizzi Dep. 20; Poniz Dep. 23-24; Verhoeven Dep. 43-44. Antiquorum developed a strong reputation in the timepiece industry, based at least in part on Patrizzi's work. Poniz Dep. 12. Patrizzi was commonly featured in periodicals extolling his and Antiquorum's success in the timepiece industry. See, e.g., Jacobson Decl. Ex. H (article in Swiss Style, titled "Antiquorum's Osvaldo Patrizzi: The genius of time" and describing him as "the man behind [Antiquorum's] success story"); Zimmerman Decl. Ex. H (article in Revolution USA, ...

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